Intellectual Property Law

Intellectual Property Rights – Nature, Meaning and Scope

Copyright - Meaning and Subject matter of Copyright
Ownership & Rights of Owner of Copyright
Registration of Copyright – Procedure
Terms of Copyright
Assignment and Licensing
Performer’s Rights and Rights of Broadcasting Organisation
Authorities under Copyright System
Infringement of Copyright and Remedies
Patents - Meaning and Subject Matter i.e. – Inventions
Procedure for obtaining Patent
Rights and Obligations of Patentee
Assignment and Licensing of Patent
Surrender and Revocation of Patent
Infringement of Patent & Remedies
Authorities under Patenting System
Trade Marks – Meaning & Subject Matter
Registration of Trade Mark
Rights of Trade Mark holder
Assignment and Transmission of Trade Mark
Authorities under Trade Mark System
Infringement and Passing Off action - Remedies
Geographical Indications – Meaning, Registration, Infringement & Legal Remedies
Industrial Design – Meaning, Registration, Rights of Design holder, Infringement and Remedies
Protection of Plant Varieties and Farmer’s Rights
Meaning and Subject matter
Meaning –
Definition - Section 2 (1)(zb) – ‘Trade Mark’ –
Section 2(1)(m) – ‘mark’ -
Illustrations – Brand, Letters, Label, Ticket, Numerals, Title etc.
Functions of Trade Marks -
Evolution and Development of Trade Marks law –
Concept of Common Law Marks –
Trade Marks Act of England, 1938 –
Trade Marks Act, 1940 –
Trade and Merchandise Marks Act, 1958 –
Trade Marks Act, 1999 –
Changes brought in Trade Marks law system by Trade Marks Act, 1999 -
(a) providing for Trade Marks of services, in addition to goods -
Section 2(1) (z) – ‘service’ –
Section 2(1)(m) - ‘mark’ –
(b) simplified procedure for registration –
(c) providing for an appellate board for speedy disposal of appeals –
(d) providing for ‘Collective Marks’ –
(e) increasing the period of registration and renewal –
(f) making the trade marks offence cognizable –
Essential characters of Trade Marks –
A kind of property, entitled to protection under law
Trade mark may be registered or non registered
Trade mark has several species – eg. – Service Marks, Collective Marks, Certification Marks,
Well Known Marks & Internet Domain Names.
Distinctiveness is the basic quality of Trade marks
Trade marks exists in perpetuity
Certain forms of Trade marks –
Service Marks –
Collective Marks –
Certification Marks –
Well known Marks –
Internet Domain Names –
Registration of Trademark
Registration Procedures – (Section 18 – 26 & Trade Marks Rules 2002)
Need of Registration –
Registrar – Offices –
Register of Trade Marks –
- Indexes –
- Register in floppies, diskettes / electronic form –
- contents of Register –
- Other documents kept with Registrar Office –
- No concept of ‘Part A’ and ‘Part B’ of the Register
Registration Procedures – (Section 18 – 26 & Trade Marks Rules 2002)
- Who can make the application –
- format / contents of application –
- single application for several classes of goods / services
- Place of filing the application for Registration –
Stages of Registration procedure –
- filing the application – preliminary objections – Acceptance / Refusal –
Advertisement in Trade Marks Journal – opposition – counter statement – oral hearing if
required – Registration subject to limitations / conditions
Conditions and Grounds for Registration –
Absolute grounds for refusal of Registration (Section 9) –
Lack of Distinctiveness –
 - meaning of distinctiveness –
- ‘Inherent Distinctiveness’ & ‘Acquired Distinctiveness’ –
- How the Acquired Distinctiveness would be proved –
- Examples –
(b) Marks descriptive of characteristics or qualities of goods or services -
- ‘Descriptive Words’ – Examples –
Absolute Grounds for refusal of Registration –
Marks common to the vocabulary of established trade practices –
It is of such nature as to deceive the public or causes confusion –
Confusion as to goods –
Confusion as to trade origin –
Confusion as to trade connection –
Marks is likely to hurt religious feelings –
Contains scandalous or obscene matters –
The Emblems and Names (Prevention of Improper Use) Act, 1950 –
Relative Grounds for refusal of Registration – (Section 11) –
If the earlier trade mark is ‘well known mark’ –
If registration is prevented by virtue of law of copyright –
Applicant’s mark is identical / similar with earlier trade mark & goods / services of applicant are
similar / identical to those of earlier trade mark and there is likely hood of confusion to the public
Assignment and Transmission of Trade Marks
(Section 37 to 45)
Section 2(1)(b) – ‘assignment’ –
Section 2(1)(zc) – ‘transmission’ –
Assignment of unregistered trade mark –
- common law principle – no assignment without goodwill –
Modern Principle –
- trade mark & goodwill are separable entities –
Assignment of unregistered trade mark without goodwill –
- problem in action for passing off -
- lack of enforceable right with assignee -
Assignment of registered trade mark –
- subject to conditions laid down in Register –

Assignment need not necessarily relates to the whole of goods or services

Assignment without the good will of the business – (Section 42) -

- TM 20 & TM21 –
- advertisement under the direction of Registrar –
- purpose of advertisement –
- time limit for making application to Registrar for
advertisement
Assignment of Certification Trade Marks –
Registration of Assignment –
- compulsory –
- stamping of Assignment Deed to be done appropriately –
- procedure of registration –
- if title is disputed –
B.S. Ramappa vs. B. Monappa
AIR 1970 Mad 156
Facts of the case –
Case came before the High Court in appeal against
Whether the ‘ Settlement Deed’ could be considered as Assignment Deed – nature of settlement
deed –
Held –
Collector of Central Excise vs. Vikshara Trading and Investment Pvt. Ltd. (2004)
13 SCC 49
Facts of the Case –
Non Registration of Assignment of Trade Marks – not always vitiate its effect
‘Registered Users of Trade Marks’ / ‘Permitted Use’
Concept of Registered Users –
- How is it beneficial –
- How is it made –
- Registration of proposed registered user of TM –
- procedures – Section 49 –
- joint application + copy of agreement + affidavit by
registered proprietor + any other evidences, if required
Power of Registrar to cancel the registration as registered user –
- Section 50 -
- Power of registered user to take the proceeding against Infringement –
Registered Users – no right to make the assignment / transmission
- Section 54 –
- If registered user is a partner to firm –
Intellectual Property Appellate Board (IPAB)

IPAB –
- concept introduced in the Act of 1999 – reasons –
- establishment of IPAB –
- matters heard by IPAB –
- benches of IPAB – seats –
- composition of benches –
Composition of IPAB –
Chairman - Qualifications – Tenure – Resignation – Removal
Vice Chairman - Qualifications – Tenure – Resignation – Removal
(c) Judicial members – Qualifications – Tenure – Resignation – Removal
(d) Technical members - Qualifications – Tenure – Resignation – Removal
Procedures –
Not bound by CPC procedures
Follows principle of natural justice –
Powers of civil courts –
Proceedings – judicial proceeding for the purpose of Section 193 & 228 of IPC –
Appeals before IPAB –
- limitation period –
- extension of limitation period –
- parties in appeal –
- procedural requirements - Trade Marks (Application and Appeals to
Intellectual Property Appellate Board) Rules, 2003
- How hearing takes place –
- communication of decision to Registrar –
- Review of order of IPAB –

Original Jurisdiction of IPAB –

Removal of TM from the register on the ground of non use – (Section 47)
Rectification of the Register in certain cases – (Section 57) –
Deciding the validity of registered trademarks – (Section 125) -
Infringement of Trademark
General meaning –
Rights conferred by registration of trade marks –
(a) Right to exclusive use –
(b) Right to remedies –
Limitations over right to exclusive uses –
If registration is not valid, rights can be challenged –
Subject to conditions and limitations laid down in register of trade marks –
(c) Will not operate against person who are registered proprietor of identical or similar marks -
(d) No restraint over the prior users of similar marks –
Infringement of registered trade marks – (Section 29) –
Essentials –
Use of marks by unauthorized persons –
Using a mark which is identical or deceptively similar with the mark of registered proprietor –
The goods / services must be specifically covered by Registration –
The infringing mark must be used in the course of trade –
There must be representation i.e.- oral use of trade mark is not infringement –
The use of trade mark likely to cause confusion to public also constitutes Infringement –

(a) Identical marks used in relation to identical goods or services –

(b) Similar marks used in relation to identical goods or services –
(c) Identical marks used in relation to similar goods or services -
- Use of similar marks in relation to different goods or services -
- If registered trade mark has gained reputation
- statutory recognition of ‘passing off action’
Action for Infringement

Where the suit to be filed –

District Court / High Court –
Jurisdiction of the court –
Period of Limitation for filing the suit –
Who can file the suit –
 (a) registered proprietor or his legal successors –
(b) registered user –
(c) assignee –
(d) an applicant for the registration of trade marks –
Evidences of Infringement / proof of title to sue –
(a) specimens of good bearing marks, advertisement, catalogue, labels, cartons etc. to be
accompanied with Plaint –
(b) certified copy of extract of Register –
(c) affidavits by dealers and customers, if required –

Who can be the Defendant –

(a) the master of the servant –
(b) the agent of the principal infringer –
(c) a person who uses or threatens to use the trade mark similar to plaintiff’s registered
mark –
(d) an applicant for the registration of trade mark -
Contents of Plaint –
- no specific format is prescribed –
- concise statement of material facts –
- intentional / fraudulent infringement – specific facts to be pleaded
- in case of composite suit of infringement and passing off – specific facts
as to distinctiveness, goodwill / reputation must be pleaded
- reliefs sought –

Contents of Written Statement –

- ground for attacking the validity of registration –
- in case application is made to IPAB –
Defences –
Plaintiff has no title to sue –
Registration is invalid –
Concurrent registration with the Defendant –
defendant’s use is prior to the registration and use of the plaintiff –

Reliefs –
Injunctions –
Interlocutory Injunctions –
Permanent Injunctions –
(b) Damages / Account of profits -
(c) Order for delivery up of infringing labels or marks –
Passing Off Action
Object – to protect the goodwill – for goods and services
Representation of goodwill –
Passing off is a form of Tort –
(a) substantive law – case law
(b) procedural laws and remedies – statutes
Test of Passing Off –
- misrepresentation
- made in the course of trade
- reasonable foresee ability of consequences –
- damage to the goodwill
Passing off – not defined in the Act –

References of Passing Off in the Act –

Section 27(2) – no action for infringement of unregistered TM – no effect over the passing off
action –
Section 134(1)(c) – suit for passing off to be instituted before District Court –
Section 135 – reliefs in suit for passing off –
- Rules of procedure -
Bhavnesh Mohanlal Amin vs. Nirma Chemicals Works Ltd.
(2006) 1 SCC 185

‘NIRMA’ registered for Class 3 goods & ‘NIMA’ registered for Class 7 goods
Civil Court – stay against the use of NIMA
High Court – irreparable loss to respondent / plaintiff, in case of non grant of injunction
Again appeal before High Court against single judge decision –
Contention of appellant –
Contention of Respondent -
NIMA held as deceptively similar to NIRMA – a very reputed trade marks
Bombay Oil Industries Pvt.Ltd. vs. Ballarpur Industries Ltd.
AIR 1989 Del 77
Facts of the case –
SAFFOLA (Safflower Oil) & SHAPOLA (Sunflower Oil) – for edible oil
Contention of Defendant –
SHAPOLA held as phonetically / deceptively similar with SAFFOLA